Paper No. 13
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`Kia Motors America, Inc.
`Petitioner,
`
`v.
`
`Signal IP, Inc.
`Patent Owner.
`
`Patent No. 6,012,007
`Issued: January 4, 2000
`Filed: June 3, 1997
`Inventors: Duane Donald Fortune, Robert John Cashler
`Title: OCCUPANT DETECTION METHOD AND APPARATUS FOR AIR BAG
`SYSTEMS
`
`___________________________
`
`Inter Partes Review No. IPR2016-00115
`
`REPLY TO PATENT OWNER’S OPPOSITION TO MOTION FOR
`JOINDER
`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________________
`
`Kia Motors America, Inc.
`Petitioner,
`
`v.
`
`Signal IP, Inc.
`Patent Owner.
`
`Patent No. 6,012,007
`Issued: January 4, 2000
`Filed: June 3, 1997
`Inventors: Duane Donald Fortune, Robert John Cashler
`Title: OCCUPANT DETECTION METHOD AND APPARATUS FOR AIR BAG
`SYSTEMS
`
`___________________________
`
`Inter Partes Review No. IPR2016-00115
`
`REPLY TO PATENT OWNER’S OPPOSITION TO MOTION FOR
`JOINDER
`
`
`
`
`
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`TABLE OF CONTENTS
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`INTRODUCTION ........................................................................................... 1
`
`
`I.
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`II. ARGUMENT .................................................................................................... 3
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`A. KMA’s request for joinder raises no new issues and would not
`complicate the proceedings in the Honda IPR. ..................................... 3
`
`B.
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`Joinder is in the public interest and will not frustrate the just, speedy,
`and inexpensive resolution of the Honda IPR. ...................................... 3
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`III. CONCLUSION ................................................................................................ 5
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`
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`i
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`
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`TABLE OF AUTHORITIES
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`Page(s)
`
`Cases
`Apple, Inc. v. Benjamin Filmalter Grobler, IPR2014-00061, Paper 10
`(Decision) at 5-6 (PTAB, Oct. 29, 2013).............................................................. 4
`
`Dot Hill Sys. Corp., et al. v. Crossroads Sys., Inc., IPR2015-00825,
`Paper 20 (Decision) at 8 (PTAB, Sept. 17, 2015) ................................................ 4
`
`Enzymotec Ltd. v. Neptune Technologies & Bioresources, Inc.,
`IPR2014-00556, Paper 19 (PTAB Jul. 9, 2014) ................................................... 1
`
`Fujitsu Semiconductor Limited v. Zond, LLC, IPR2014-00845, Paper 14
`(PTAB Oct. 2, 2014) ......................................................................................... 1, 3
`
`Kia Motors America, Inc. v. Signal IP, Inc., IPR2016-00115, Order,
`Paper 12 at 2 (PTAB Dec. 7, 2015) .................................................................. 3, 4
`
`Nintendo of Am., Inc., et al. v. Babbage Holdings, LLC, IPR2015-00568,
`Paper 12 (PTAB Mar. 18, 2015) ................................................................... 1, 2, 4
`
`Perfect World Entm’t, Inc. v. Uniloc USA, Inc., et al., IPR2015-01026,
`Paper 10, (PTAB Aug. 3, 2015) ................................................................... 1, 2, 3
`
`Perkins v. Kwon,
`886 F.2d 325 (Fed. Cir. 1989) .............................................................................. 4
`
`Other Authorities
`
`157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) ........................................................ 1
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`ii
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`I.
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`
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`INTRODUCTION
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`The Board routinely grants motions for joinder where the party seeking
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`joinder introduces identical arguments and the same grounds in the existing
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`proceeding. See, e.g., Perfect World Entm’t, Inc. v. Uniloc USA, Inc., et al.,
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`IPR2015-01026, Paper 10, (PTAB Aug. 3, 2015); Fujitsu Semiconductor Limited
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`v. Zond, LLC, IPR2014-00845, Paper 14 (PTAB Oct. 2, 2014); Enzymotec Ltd. v.
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`Neptune Technologies & Bioresources, Inc., IPR2014-00556, Paper 19 (PTAB Jul.
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`9, 2014). This is the exact situation here, and KMA’s motion for joinder should be
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`granted consistent with the Board’s “policy preference for joining a party that does
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`not present new issues that might complicate or delay an existing proceeding.”
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`Enzymotec, IPR2014-00556, Paper 19, at 5; see also 157 Cong. Rec. S1376 (daily
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`ed. Mar. 8, 2011) (statement of Sen. Kyl) (“The Office anticipates that joinder will
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`be allowed as of right – if an inter partes review is instituted on the basis of a
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`petition, for example, a party that files an identical petition will be joined to that
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`proceeding . . .”)) (emphasis added).
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`
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`Joinder is also routinely granted when the petitioner files a petition and
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`motion for joinder within 30 days of the institution of trial in the existing
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`proceeding. Nintendo of Am., Inc., et al. v. Babbage Holdings, LLC, IPR2015-
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`00568, Paper 12 (PTAB Mar. 18, 2015)). Because KMA timely filed its petition
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`and motion for joinder within one month of the October 1, 2015 institution of
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`1
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`
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`Honda’s IPR and there is nothing unusual about KMA’s request for joinder,
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`KMA’s motion for joinder should be granted.
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`
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`Patent Owner’s argument that the proceedings in the Honda IPR have
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`reached or soon will reach its substantive stages is not persuasive. KMA’s identical
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`petition and motion for joinder were filed before the close of discovery and Patent
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`Owner’s response is not due until January 4, 2016. See Honda IPR, Scheduling
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`Order, Paper 12; see also Perfect World, IPR2015-01026, Paper 10 at 6 (granting
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`joinder despite patent owner’s argument that the existing IPR has reached its
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`substantive stages). Indeed, KMA did not participate in the December 1, 2015
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`deposition of expert, Dr. Carr, and has no intention to revisit the already conducted
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`deposition of Dr. Carr. Rather, KMA simply seeks to join the ongoing Honda IPR,
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`adopting its “understudy” role upon the grant of joinder.
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`
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`Patent Owner further argues that by joining KMA, termination of the
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`proceeding would not be possible. This argument is also unpersuasive and
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`premature because there has been no indication of Honda and Patent Owner
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`reaching a settlement agreement and a Motion to Terminate has not been filed. See
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`Nintendo, IPR2015-00568, Paper 12 at 4-5 (granting joinder despite patent owner’s
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`concerns of settlement because at the time Nintendo filed its petition and motion
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`for joinder, no Motion to Terminate had been filed in the existing IPR
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`proceeding).
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`
`
`2
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`
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`II. ARGUMENT
`
`A. KMA’s request for joinder raises no new issues and would not
`complicate the proceedings in the Honda IPR.
`
`
`
`The Board routinely grants joinder in cases where, as here, the petition of the
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`party seeking joinder “asserts identical grounds of unpatentability, challenging the
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`same claims” of the challenged patent. Fujitsu, Paper 14 at 4. Likewise here,
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`KMA’s petition is substantively identical to the petition filed in the Honda IPR and
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`KMA has submitted substantially the same declaration of Dr. Carr as Honda had
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`submitted. Indeed, the Board found it appropriate to shorten the due date for Patent
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`Owner’s Preliminary response in this proceeding because KMA raises the same
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`challenges as those instituted in the Honda IPR. See IPR2016-00115, Order, Paper
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`12 at 2 (PTAB Dec. 7, 2015). By joining the two proceedings, the substantive
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`issues would not be unduly complicated. See Perfect World, IPR2015-01026,
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`Paper 10 at 5-6 (granting joinder where petitioner brought the same challenges
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`presented by the existing IPR). In fact, joinder would avoid duplication and
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`promote the efficient resolution of both proceedings because Patent Owner would
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`address the challenges in a single proceeding. Id.
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`B.
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`Joinder is in the public interest and will not frustrate the just,
`speedy, and inexpensive resolution of the Honda IPR.
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`
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`Especially where the two petitions are substantively identical, the Board has
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`found unpersuasive a patent owner’s argument that if joinder is granted, settlement
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`3
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`
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`will not have its intended consequence (i.e., termination) and the trial schedule will
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`be disrupted. See Nintendo, IPR2015-00568, Paper 12 at 3-5. The Board in
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`Nintendo granted Nintendo’s motion for joinder because at the time Nintendo’s
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`petition and motion for joinder were filed, no Motion to Terminate had been filed
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`in the existing IPR proceeding and the Board found joinder unlikely to disrupt the
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`trial schedule. Id. at 4-5. Likewise here, no Motion to Terminate has been filed in
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`the Honda IPR, and joinder is unlikely to alter the trial schedule.
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`
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`Moreover, despite the possibility of settlement between Honda and Patent
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`Owner, joinder is in the public interest because it resolves questions about a
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`patent’s validity. See Perkins v. Kwon, 886 F.2d 325, 329 (Fed. Cir. 1989) (“The
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`public interest in the benefits of a patent system is best met by procedures that
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`resolve administratively questions affecting patent validity that arise before the
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`PTO.”); see also Dot Hill Sys. Corp., et al. v. Crossroads Sys., Inc., IPR2015-
`
`00825, Paper 20 (Decision) at 8 (PTAB, Sept. 17, 2015) (granting motion for
`
`joinder because any potential prejudice to patent owner due to joinder “does not
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`outweigh the prejudice to Dot Hill of losing its opportunity to challenge the claims
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`of the” challenged patent); cf. Apple, Inc. v. Benjamin Filmalter Grobler, IPR2014-
`
`00061, Paper 10 (Decision) at 5-6 (PTAB, Oct. 29, 2013) (denying Apple’s motion
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`for joinder because “Apple’s disappointment with Sony’s decision to settle [the
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`existing IPR] does not establish that the interests of justice require the Board to
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`4
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`authorize Apple to file a motion to revive a proceeding it deliberately chose to
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`avoid, so that Apple can join the revived proceeding and pursue the action in
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`Sony’s stead.”).
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`III. CONCLUSION
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`
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`For the foregoing reasons, KMA respectfully requests that its petition for
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`inter partes review of the ʼ007 Patent be instituted, and that the proceeding be
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`/s/ Heath J. Briggs
`Heath J. Briggs (Reg. No. 54,919)
`Greenberg Traurig, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Telephone: (303) 572-6500
`Fax: (303) 572-6540
`Email: briggsh@gtlaw.com
`
`Patrick J. McCarthy (Reg. No. 62,762)
`Greenberg Traurig, LLP
`2101 L Street NW, Ste. 1000
`Washington, DC 20037
`Telephone: (202) 331-3100
`Fax: (202) 331-3101
`Email: mccarthyp@gtlaw.com
`
`Attorneys for Petitioner KIA MOTORS
`AMERICA, INC.
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`5
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`joined with Honda’s IPR.
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`Respectfully submitted,
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`Dated: December 17, 2015
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 17th day of December, 2015, a copy of this
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`REPLY TO PATENT OWNER’S OPPOSITION TO MOTION FOR JOINDER
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`has been served in its entirety on the following e-mail address for patent owner:
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`Respectfully submitted,
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`Date:
`
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`Ascenda Law Group, PC
`333 W San Carols St.
`Suite 200
`San Jose, CA 95110
`Email: tarek@fahmi@ascendalaw.com
`
` holly.atkinson@ascendalaw.com
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`Tarek Fahmi of the Ascenda firm consented to electronic service.
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`December 17, 2015
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`
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`/s/ Heath J. Briggs
`Heath J. Briggs (Reg. No. 54,919)
`Greenberg Traurig, LLP
`1200 17th Street, Suite 2400
`Denver, CO 80202
`Telephone: (303) 572-6500
`Fax: (303) 572-6540
`Email: briggsh@gtlaw.com
`
`
`6
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